INTELLECTUAL PROPERTY

Expansion of reference in Enterprise Agreement to include moral rights provisions.

Date Last Reviewed:

Responsible Officer:

Director, Research Services

ENTERPRISE AGREEMENT 2010–2013, CLAUSE A10 INTELLECTUAL PROPERTY

A10.1 The University will have and maintain an intellectual property policy that respects and promotes the rights and interests of originators and the University.

A10.2 Thepolicy willaddress how originators and the University will benefit equitably.

A10.3 The specific manner in which financial returns from the commercial exploitation of intellectual property are delivered to originators and the University will vary depending on the circumstances involved.

A10.4 The University will abide by the principle of moral rights by taking reasonable steps to ensure that:

A10.4.1 the rights of originators to attribution of their work are respected; and

A10.4.2 an originator’s right to dissociate herself or himself from the development or embodiment of intellectual property is respected.

POLICY AND PROCEDURES

1

Definitions For the purposes of this policy:
'Flinders Partners' means Flinders Partners Pty Ltd, the controlled entity established by the University to provide services in commercialising University Intellectual Property.
'Intellectual Property' means any proprietary right which arises under, or is capable of being obtained under, legislation relating to copyright, patents, designs, circuit layouts or plant varieties, or which otherwise exists at law, including trade secrets, know how and other confidential information and unregistered trademarks and tradenames.
'Originator' means the creator or creators of an item of intellectual property.
'Deputy Vice-Chancellor (Research)' means the person holding that office or a surrogate appointed by the Vice-Chancellor.
'student' means an enrolled student of the University.
'teaching materials'means any material which is prepared for delivery to students for the purposes of instruction or assessment in print, audiovisual or electronic form.

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Introduction2.1 The University has certain rights under common law and by statute to ownership of intellectual property created by staff, whether members of the academic staff or the general staff, in the course of their employment.2.2 In practice the University wishes to exercise its rights of ownership only in cases where the intellectual property may have significant commercial value. The University is also prepared in many cases to concede ownership of copyright in works created in the course of employment, in return for a licence to use that work for teaching and research purposes.2.3 The University adheres to the principle that scholarly work should be made available in the public domain to advance knowledge and benefit the community. To the extent that this principle may on occasion conflict with commercial considerations the University will endeavour to resolve the conflict so that publication may occur without undue delay, having regard to the circumstances and the wishes of the originator.2.4 The University adheres to the principle that where there are financial returns from the commercial exploitation of intellectual property the originator and his or her faculty should benefit equitably.2.5 The University may require students working with or under the supervision of staff in investigative or creative activities to agree to assign intellectual property rights to the University upon request. It undertakes that student originators will be treated equitably, and on the same basis as staff, with respect to the financial returns from the commercial exploitation of intellectual property.2.6 Staff should be aware that under the general law and the terms of their employment they must not use or disclose any confidential information acquired in the course of their employment, except with the consent of the University. This obligation would, for example, cover 'know-how' relating to an invention developed within the University if that information is not in the public domain. Staff may also owe an obligation of confidentiality towards a third party in respect of information supplied to them in connection with research or administration: for example, personal information relating to a student, or commercially sensitive information belonging to a firm or organisation.

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Exercise of University Rights to Intellectual Property3.1 Except as set out below, the University retains ownership of all intellectual property created by academic or general staff in the course of their employment.3.2 Subject to Clause 9, the University agrees that the originator owns the copyright in any work or subject matter (other than any item of teaching material — which is dealt with in Clause 4 below — or any computer program) created in the course of employment, provided that: 3.2.1 the originator must distribute any remuneration received from the commercial exploitation of each such work or subject matter in accordance with the provisions of Clause 6; and3.2.2 the originator agrees to grant a payment free, non-exclusive and irrevocable licence to the University to reproduce, publish, perform, broadcast, disseminate and otherwise use the work or subject matter.3.3 Where the University decides that it does not wish to involve itself in the exploitation of particular intellectual property the originator will be free to do so. In such circumstances the University will assign its rights to the originator upon request.3.4 Where the University wishes to exploit intellectual property commercially, it will engage Flinders Partners as its preferred provider of services for this purpose..

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Copyright in Teaching Materials4.1 The University owns copyright in teaching materials which are produced by its staff in the course of their employment.4.2 Subject to this Policy the University will normally be willing to allow staff to use, in the course of subsequent employment by another University, teaching materials which they prepared while employed at the University. Similarly the University will normally allow staff and former staff to use teaching materials for publication and other academic purposes.4.3 Where it is believed that an item of teaching material has strategic or commercial significance the University may forbid or restrict its use for other than the purposes of the University.4.4 A staff member or a former staff member who wishes to use an item of teaching material for a purpose other than a Flinders University purpose may apply for permission to the relevant Executive Dean of the Faculty and the Executive Dean of the Faculty will consider the matter, decide it and communicate the decision to the staff member and the Vice-President (Strategic Finance and Resources) who shall maintain an official record.4.5 Where a staff member or a former staff member is dissatisfied with a decision made by an Executive Dean of the Faculty under Clause 4.4 he or she may apply in writing to the Deputy Vice-Chancellor (Research) for a review. The Deputy Vice-Chancellor (Research) in that event will consider the original request of the staff member and the decision of the Executive Dean of the Faculty and determine the matter.4.6 The use of teaching material by the University does not constitute commercialisation or commercial exploitation under this policy notwithstanding that the University may have received fees from students or any other revenue.

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Procedures5.1 Where an originator creates intellectual property, except intellectual property as covered by Clause 3.2, which may be capable of commercial exploitation he/she must inform his/her Executive Dean of the Faculty, who in turn will inform the Deputy Vice-Chancellor (Research).5.2 The Deputy Vice-Chancellor (Research), after consultation with the Executive Dean of the Faculty and the originator, will decide whether the University will exercise its rights of ownership to the intellectual property.
When the Deputy Vice-Chancellor (Research) determines whether the University will exercise its rights to ownership in the intellectual property, he/she will so inform the originator and the Executive Dean of the Faculty within six months of receiving notification under Clause 5.1.5.3 Where the University is the sole owner of the intellectual property, the Deputy Vice-Chancellor (Research) will inform Flinders Partners Pty Ltd of its existence.5.4 Where the intellectual property is encumbered by legal arrangements with a research funding body or other third party the Deputy Vice-Chancellor (Research) will determine the action to be taken with regard to commercial exploitation.5.5 Where confidentiality about the intellectual property should be maintained to enhance or preserve its value, the Deputy Vice-Chancellor (Research) will consult the originator with a view to determining a time at which any publication which discloses the intellectual property may take place.
Recognising that the publication of research results is a primary aim of the University, under no circumstances will the University require a delay in publication beyond 18 months.

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Distribution of Financial Returns6.1 The costs of, and reasonable charges related to, protecting, maintaining protection, marketing, administering and commercialising an item of intellectual property shall be a first charge against revenues received.6.2 Net revenues received by the University in respect of each commercialisation of intellectual property determined after the deduction of costs and charges as per Clause 6.1 shall be distributed as follows:

Annual Net Return ($k)

Originator

Faculty

University

0-15

100%

0%

0%

15-50

60%

20%

20%

50-100

50%

25%

25%

More than 100

40%

30%

30%

6.3 The originator may use the net revenues he or she receives for:6.3.1 University purposes; and/or6.3.2 personal remuneration, in which case income tax shall be deducted.6.4 Where there is more than one originator of an item of intellectual property the 'originator' share of net revenues as specified in Clause 6.2 will be distributed among them in such shares as they may mutually agree. Where the joint originators are unable to reach agreement, the funds concerned will be held in trust by the University until a legal basis for payment to the originators exists. Funds so held in trust will, after five years, be disbursed among the originators in such manner as the Council of the University may determine.

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Students7.1 The University acknowledges that in law, ownership of intellectual property developed by a student in the course of his or her studies at the University vests in the originator on creation. The University therefore makes no claim to ownership of intellectual property developed by a student except where a student has developed the intellectual property directly in the course of working as a staff member of the University, in which case the provisions of this Policy relating to staff will apply.7.2 The University may require students who will be undertaking research work with, or under the supervision of, staff in an investigative or creative activity to enter into an agreement, prior to commencement of that activity, to assign intellectual property rights to the University upon request.7.3 The University will institute procedures to explain the content and effect of any such agreement, and will advise students to obtain independent advice before signing an agreement.7.4 The University will require students to assign intellectual property rights only in situations where there is a significant contribution to the development of that intellectual property by a staff member or where the University has pre-existing ownership of related intellectual property.7.5 A student who has assigned intellectual property rights to the University will be treated thereafter, with respect to this policy, as if he or she were a member of staff.7.6 Nothing in this policy shall restrict the rights of students to hold copyright in their theses and other forms of assessment exercises and to submit these for examination. The University may require examiners to keep confidential the contents of a thesis where necessary to enhance or preserve the value of intellectual property contained therein.

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Responsibilities of Originators
Where it is decided by the University to exploit commercially an item of intellectual property the originator will provide reasonable assistance, for example, by providing information promptly upon request or providing advice to the University about further development.

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Obligations to Third Parties9.1 Where the University has contracted with another party to undertake an investigative project or other activity which may lead to the creation of intellectual property, and where the agreement between the University and that party deals with the ownership of intellectual property, ownership of intellectual property will be governed by that agreement.
As far as practicable, the University will attempt to ensure that the terms of agreement with third parties are consistent with the principles set out in this policy.9.2 Where University staff are seconded to another party to undertake an investigative project or other activity which may lead to the creation of intellectual property, such secondment will require an agreement between the University and that party, as outlined in Clause 9.1, prior to the approval of the secondment by the University.

10

Moral Rights10.1 The University will take reasonable steps to ensure that the rights of originators to attribution of their work are respected.10.2 The University will take reasonable steps to ensure that an originator's right to dissociate himself or herself from the development or embodiment of intellectual property is respected.

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Disputes11.1 a dispute arises as to the operation of this policy, or as to any matter on which the operation of this policy depends, the Deputy Vice-Chancellor (Research) may appoint a mediator who can assist the parties in resolving their dispute.11.2 If such a dispute cannot be resolved through the assistance of a mediator, the Deputy Vice-Chancellor (Research) may appoint an arbitrator to investigate and decide the matters in dispute.11.3 The arbitrator may adopt whatever procedure he or she sees fit, provided each party is given a fair hearing.11.4 In selecting a mediator or arbitrator, the Deputy Vice-Chancellor (Research) must, as far as is reasonably practicable, choose a person who is acceptable to all parties.

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Dissemination
The University will take reasonable steps to disseminate and explain this policy to staff and to students who may be affected by it.